Richards Layton & Finger
 

Judge Sleet Denies Defendant's 101 Motion

October 5, 2016

In JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC, C.A. No. 16-212-GMS (D. Del. Sept. 6, 2016), Judge Sleet denied the defendant’s motion to dismiss the complaint, finding insufficient evidence to invalidate the four patents-in-suit under 35 U.S.C. § 101. Noting that the defendant had argued that one claim was representative of all of the asserted claims in the case, Judge Sleet stated that three questions must be considered: (1) “[A]re all non-representative claims adequately represented by the representative claim (i.e., do all of the challenged claims relate to the same abstract idea and do any of the non-representative claims add one or more inventive concepts that would result in patent eligibility)?”; (2) “[A]re there issues of claim construction that must be decided before resolving the motion?”; and (3) “[I]s there any set of facts that could be proven relating to preemption, questions of patentability, or whether the claims ‘solve a technological problem,’ that would result in a determination that one-or more of the claims are patent-eligible?”

Turning to the first question, Judge Sleet found that the defendant had failed to identify a consistent abstract idea among all the asserted claims, noting that the defendant simply stated “in conclusory fashion” that all the asserted claims generally related to the same subject matter. Second, Judge Sleet stated that he “is not inclined to dismiss the claims absentor claim construction issues for his consideration before determining whether the patents-in-suit are ineligible. Finally, Judge Sleet found that there was inadequate evidence to provide a “conclusive answer” as to whether there were any facts that could be proven that would result in the asserted claims being patent-eligible.

Key Points:  Many 101 decisions are made early in the case under Rules 12(b)(6) or 12(c), but others must wait until the record is developed.